World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Asia Innovation Inc.

Case No. D2012-0959

1. The Parties

The Complainants are Costco Wholesale Membership Inc. and Costco Wholesale Corporation of Issaquah, Washington, United States of America, represented by Law Office of Mark J. Nielsen, United States of America (“United States”).

The Respondent is Asia Innovation Inc. of Da-An District, Taipei City, Taiwan Province of China.

2. The Domain Name and Registrar

The disputed domain name <fruitcostco.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2012. On May 7, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On May 10, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2012.

The Center appointed Douglas Clark as the sole panelist in this matter on June 14, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a large international retailer through warehouse club merchandising. It operates over 601 warehouse stores worldwide. It is the third largest retailer in the United States and seventh largest retailer in the world with USD 87 billion in sales in 2011.

The Complainant first registered the trademark COSTCO in the United States in 1996. It is also the registrant of the domain name <costco.com>.

The Complainant first opened a warehouse store in Taiwan Province of China in 1997 and currently has 8 warehouse stores in Taiwan Province of China. The Complainant also operates a website at “www.costco.com.tw” to support its operations in Taiwan Province of China.

Through Price Costco International, Inc., a wholly owned subsidiary, the Complainant has registered the trademark COSTCO (in red letters) in Taiwan Province of China in 2001. It also has registration in China and Hong Kong, China.

The disputed domain name <fruitcostco.com> was registered on January 8, 2012. It redirected to a Chinese language website for the sale of fruit in Taiwan Province of China (“www.fruitcost.com”). It currently resolves to the Complainant’s website “www.costco.com” in English language.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its registered trademark COSTCO. It is composed of the Complainant’s trademark COSTCO and the common term “fruit”.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as it has not made any bona fide use of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith with the intention of diverting Internet users to its website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

This is a relatively straightforward case which, in the Panel’s opinion, does not require detailed discussion. The fact that the Respondent has re-directed the disputed domain name to the Complainant’s own website can only be taken as an indication that it recognizes implicitly the Complainant’s rights.

A. Identical or Confusingly Similar

The disputed domain name <fruitcostco.com> is composed of the Complainant’s registered trademark COSTCO and the generic word “fruit”. It is confusingly similar to the Complainant’s registered trademark. According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The first element of the UDRP is made out.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.

Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out.

C. Registered and Used in Bad Faith

The Panel also finds that the disputed domain name <fruitcostco.com> was registered in bad faith and is being used in bad faith.

This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The third element of the UDRP is made out.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fruitcostco.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Dated: June 28, 2012

 

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